Ex Parte Schwarzwalder

Board of Patent Appeals and Interferences

Jun 14, 2004

09532579 (B.P.A.I. Jun. 14, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT NATHAN SCHWARZWALDER JR.
____________
Appeal No. 2003-0182
Application No. 09/532,579
____________
ON BRIEF
____________
Before STAAB, MCQUADE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-7, 9-
13 and 15-18, which are all of the claims pending in this application.
We REVERSE.
BACKGROUND
The appellant's invention relates to a system and method of providing
geographically related information to an onboard information device in a vehicle
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1 The examiner’s inclusion of canceled claims 8 and 14 in this rejection appears to have been an
inadvertent error.
(specification, page 1). A copy of the claims under appeal is set forth in the appendix to
the appellant's brief.
The examiner relied upon the following prior art references of record in rejecting
the appealed claims:
Brunts et al. (Brunts) 5,774,828 Jun. 30, 1998
Dunworth et al. (Dunworth) 5,930,474 Jul. 27, 1999
Rosen et al. (Rosen) 6,014,090 Jan. 11, 2000
Zuber et al. (Zuber) 6,029,110 Feb. 22, 2000
Obradovich et al. (Obradovich) 6,148,261 Nov. 14, 2000
(filed Jun. 20, 1997)
The following rejections are before us for review.
Claims 1-5, 7, 10-12 and 16-181 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Rosen in view of Obradovich and Dunworth.
Claims 6 and 13 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Rosen in view of Obradovich, Dunworth and Brunts.
Claims 9 and 15 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Rosen in view of Obradovich, Dunworth and Zuber.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(Paper No. 13) for the examiner's complete reasoning in support of the rejections and to
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the brief and reply brief (Paper Nos. 12 and 14) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Rosen, the primary reference relied upon by the examiner in the obviousness
rejections, discloses a method and apparatus for delivering local (geographically
related) information to travelers. The apparatus comprises a mobile communication
system 130 including (1) a telecommunication transceiver 131, such as a cellular
telephone, (2) a user interface device 133, which has the hardware and/or software
necessary to allow the user to interface with the transceiver and may be a computer
with an input device such as a keyboard or voice recognizer and an output device such
as a monitor, heads-up display or audio speaker, and (3) a geographic location device
132, such as a global positioning system (GPS) receiver which receives signals from
the GPS satellite system, thereby specifying the location of mobile communication
system 130. The apparatus further includes a resolution server 110 connected to the
mobile communication system 130 via telecommunications network 100 and a resource
server 120 which stores resources, such as web pages or audio content. The
resolution server is adapted to deliver at least one resource server address to mobile
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communication system 130 based on the geographic location of mobile communication
system 130 and can comprise processor 111, memory 112 having the appropriate
association instructions and association data and port 113. Rosen discloses that a user
profile, unique for the user of the mobile communication system 130, can be predefined
and stored in memory 112 of resolution server 110. Based on the geographic location
of the mobile communication system and the predefined user profile, the resolution
server selects and transmits to the mobile communication system 130 resource
addresses of resources containing local information that correspond to the user’s
profile. The user can then select one or more addresses from the transmitted
addresses, whereupon the resource server will transmit information from the user
selected resource address(es) to the mobile communication system.
In rejecting independent claims 1, 11 and 18, the examiner identifies at least two
differences between the claimed subject matter and the primary reference to Rosen.
One difference is that Rosen discloses storage of the user profile in memory 112 of the
resolution server 110, which, in combination with the resource server 120, corresponds
to the remote travel information system recited in claims 1, 11 and 18, rather than on
the mobile communication system 130, which corresponds to the onboard information
device of claims 1, 11 and 18, as called for in claims 1, 11 and 18. A second difference
is that Rosen does not specify how the information and resource addresses are stored
and searched and thus fails to disclose a remote travel system which segments the
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geographically related information and indexes the geographically related information
by subject and location, as also called for in claims 1, 11 and 18.
With regard to the second-mentioned difference, Dunworth teaches organization
of information first by geographical location and secondly by topic and subtopic so that
information which is associated with particular geographical locations can be readily
accessed (Dunworth abstract) for the benefit of users who may desire to access
information predicated upon geographical areas as opposed to by subject matter or
keyword searches (column 2, lines 28-33). Dunworth also teaches that the information
may be organized into a hierarchy of geographical areas, from large areas such as
continents to smaller areas such as countries and even smaller areas such as states
and cities. We share the examiner’s view that Dunworth would have provided ample
motivation to one of ordinary skill in the art at the time of appellant’s invention to
organize the information stored in Rosen’s resolution server first hierarchically by
geographical location and secondly by topic and subtopic so that the information may
be readily accessed based upon the geographic location of the mobile communication
system 130 so as to provide local information to the user.
In addressing the other noted difference, namely, the storage of Rosen’s user
profile in memory in the resolution server rather than within a memory on the mobile
communication system (onboard information device) as called for in claims 1, 11 and
18, the examiner states on pages 4 and 5 of the answer that:
[s]ince Rosen teaches the concept of sending information to
a mobile user retrieved based on a stored user profile, it
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would have been an obvious matter of engineering choice to
store the profile at the mobile device instead of at the remote
information device, merely depending on whether the
advantage of allowing easier updating of a profile at a
mobile device was considered more desirable than not
having to transmit the profile to a remote information device
continuously, such as is the case in Rosen, both techniques
providing the equivalent function of sending profile related
information from a remote site to a mobile user, appellant
citing no criticality for use of one technique versus the
equivalent technique.
We note, as does appellant on page 2 of the reply brief, that the examiner provides no
factual support for this position. Rejections based on 35 U.S.C. § 103 must rest on a
factual basis. In making such a rejection, the examiner has the initial duty of supplying
the requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
As for the examiner’s characterization of the storage of the user profile on the
mobile device and storage of the user profile on the remote information system as
functional equivalents, we note the following. First, the examiner has not proffered any
evidence establishing that these two arrangements are, or would have been recognized
as, functional equivalents. Second, expedients which are functionally equivalent to
each other are not necessarily obvious in view of one another. In re Scott, 323 F.2d
1016, 1019, 139 USPQ 297, 299 (CCPA 1963).
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2 Obradovich is relied upon merely for its teaching of the use of a personal communications
device (PCD) in a GPS system. To the extent that Rosen might not be considered to teach the use of a
hand-held computer as the mobile communication system 130, the examiner has determined that
Obradovich would have suggested such.
We also observe that 35 U.S.C. § 103 does not require an applicant to cite
criticality for differences between the claimed invention and the prior art. Rather, the
test for obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). The mere fact that the prior art could be so modified would not
have made the modification obvious unless the prior art suggested the desirability of
the modification. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84
(Fed. Cir. 1992); In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir.
1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
In this instance, the examiner has adduced no factual basis in the record to
support the position that it would have been obvious to store Rosen’s user profile in
memory on the mobile communication system rather than on the resolution server.2
We thus find ourselves in agreement with appellant that the examiner’s conclusion of
obviousness is grounded on unfounded assumptions or impermissible hindsight to
supply deficiencies in the factual basis. We are therefore constrained to reverse the
examiner’s rejection of claims 1, 11 and 18, as well as claims 2-5, 7, 10, 12, 16 and 17
depending from claims 1 and 11.
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Inasmuch as neither Brunts, relied upon for its teaching of a GPS system which
takes into account ground velocity in determining position, nor Zuber, relied upon for its
teaching of a keypad lockout, cures the above-noted deficiency of the combination of
Rosen, Obradovich and Dunworth, we must also reverse the rejections of claims 6 and
13 as being unpatentable over Rosen in view of Obradovich, Dunworth and Brunts and
claims 9 and 15 as being unpatentable over Rosen in view of Obradovich, Dunworth
and Zuber.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1-7, 9-13 and 15-18
under 35 U.S.C. § 103 is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/ki
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Daniel I. Bliss
Bliss McGlynn P.C.
2075 West Big Beaver Road
Suite 600
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